Oracle and Google have both responded to Judge Alsup’s order and it seems Oracle are willing to withdraw three patents from the patent infringement trial, but with a condition.
The wrangling in the embittered Java/Android court case between two tech giants, Oracle and Google is still ongoing, with both still disagreeing on the date for the infringement part of the trial.
Following Judge Alsup’s ultimatum for Oracle to respond to his February 24th order, in which both parties were asked for a ‘candid discussion’ of the re-examined patents, Oracle hasn’t entirely dropped the patent infringement part of their lawsuit against Google but given a clear prefence for a mid-April trial date above a larger number of asserted patents.
Already rocked by the ‘James Gosling’ patent being taken out of commission, Oracle’s response appears to be for speed, stating they will withdraw three patents from the litigation (‘720, ‘205, ‘702) and probably put all their weight behind the copyright case, with no more than two other patents featuring in the infringement part. They stated:
Oracle’s highest priority is to bring this case to trial as soon as possible, and within the time period recently suggested by the Court (mid-April to mid-June, 2012). Accordingly, if the case goes to trial this spring, Oracle will withdraw from the litigation with prejudice each claim of the ’720, ’205, and ’702 patents asserted against Google that remains rejected at the time of trial, and proceed with the copyright case, the ’520 patent, the ’104 patent, and any asserted claims of the other three patents that are confirmed by the PTO.
You may have noticed a caveat within that response – ‘if this case going to trial this spring’. Strange that Oracle were asked to provide ‘a candid discussion’ and don’t really do that. If the disqualified patents are reinstated through appeal, they are back in play. Oracle don’t seem to want to let go of them just yet. An optimistic approach certainly that is banking on reassertion.
Google argues that Oracle should withdraw irrevocably the three patents that stand rejected straight away and that the whole case shouldn’t go to trial before the fall, to allow full re-examination of the Gosling patent, which Google believes will happen by the summer unless Oracle stalls. Google has contested the worth of the two remaining patents, as reported on Groklaw:
The only asserted patent to survive the reexamination process to date is the ‘520 patent; however, Oracle has attributed to this patent the least value of any of the seven patents originally asserted. (See Exhibit 18a to Iain Cockburn’s Third Damages Report (ascribing to the ‘520 patent a 0.3% apportionment percentage).) The ‘104 patent is the only other patent without a final rejection, but it currently stands rejected and a response from Oracle is due on April 16, 2012.
Even if the jury was to conclude that the ‘104 patent is valid, Oracle has admittedly failed to mark with respect to that patent, which expires on December 12, 2012, so the potential damages period is relatively narrow and the propriety of an injunction questionable.
As Alsup said previously, he wanted to streamline the trial, and Oracle’s stance (as admirable as it may be, in terms of not letting go) throws a spanner in the works. Florian Mueller of FOSS Patents thinks Alsup won’t accept this response, saying:
He can’t force Oracle to withdraw anything, but he can delay resolution of the case, and that gives him enormous leverage. Oracle’s conditional offer to withdraw claims from three patents unless the USPTO reconsiders between now and a spring trial would serve the purpose of streamlining the trial but the judge might prefer an immediate withdrawal in order to simplify trial preparation
All signs are pointing to further stalling from Oracle, ultimately ending with a single patent trial. When this will be could be anyone’s guess, but a spring trial looks incredibly unlikely now as Oracle may have to make further concessions to appease the judge. We should hear his response within the next week or so, and it will be interesting to see how he views Oracle’s offer.